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Wednesday, July 07, 2010

After the Bilski decision was rendered by the Supreme Court, the USPTO issued a press release, stating that the PTO "will be issuing guidance further interpreting the decision as soon as possible" and that the PTO will be issuing interim guidance for the examining corps in the meantime.

The interim guidelines state that the machine-or-transformation test should continue to be used as a "tool", but if there is no "clear indication" that the invention is something other than an abstract idea, the examiners should reject the application. At this point, applicants have the burden to explain why the invention is not an abstract idea:

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transfonnation test, the method is likely patent·eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.

Of course, this approach to examination appears to be contrary to Oetiker which held that "the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (see MPEP 2106(IV)(D)).

Oetiker recognizes that the PTO uses "prima facie case" to shift the burden. That is all that this notice to staff does. It requires the applicant to state a reason why the claimed invention is not an abstract idea if the claimed invention flunks the MOTT. Note that it's just giving a reason, not even producing evidence -- thus a very slight burden shift. Quite reasonable given the statement in Benson et al. that all of our past precedents have fact patterns satisfying the MOTT, but we do not say there can never be an exception. -- Richard H. Stern, Washington DC

I believe that you miss the point. Even a "slight" burden shift is inappropriate if the prima facie case is not made.

Further, the Supreme Court expressly said that failing the Machine or Transformation test does NOT indicate patent ineligibility under Section 101. The burden of persuasion has not been met by the Office merely asserting that since the Machine or Transformation test has been failed and it "appears" that the claim is to a abstract concept.

Your idea that the burden shift only entails "giving a reason, not even producing evidence" evidences a fundamental misunderstanding of what the burden shift entails and just why the Office memo is illegal.

This post makes a good point. Maybe this is part of the USPTO's strategy of reducing potential backlog. David Kappos has stated that improving patent quality is one of his priorities, and the burden-on-the-applicant approach may be one way of addressing both patent quality and backlog reduction. If this approach results in fewer frivolous patent litigation actions, then maybe it's not so bad.

For an attorney to remark "Yes, but the USPTO needs some sort of bright line rule to tell their Examiners... and for most cases, they'd be right. Not a perfect system, but it's ... a system."is incredulous. I don't care why someone in authority is telling examiners to do something illegal. "Because it's easy" is never and acceptable response.

Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents. http://www.pinskylaw.ca

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About Me

Peter is a patent attorney practicing with a general-practice firm in the Chicago area. He handles a diverse intellectual property practice in the electrical, computer and software fields for leading technology companies located throughout the world, as well as for local and national start-ups and business ventures. He works closely with established and emerging-growth companies to implement successful patenting and litigation strategies. He is also a former patent examiner with the USPTO, and sincerely hopes you won't hold that against him.

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